Wincor Nixdorf International GmbH

Patent Trials and Appeals Board

Apr 21, 2020

14017092 - (R) (P.T.A.B. Apr. 21, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
14/017,092 09/03/2013 Christian STARKE 025018-0022 1094
115462 7590 04/21/2020
Diebold, Incorporated
c/o Black, McCuskey, Souers & Arbaugh, LPA
220 Market Avenue, South, Suite 1000
Canton, OH 44702
EXAMINER
KAZIMI, HANI M
ART UNIT PAPER NUMBER
3691
NOTIFICATION DATE DELIVERY MODE
04/21/2020 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
eofficeaction@appcoll.com
ip@bmsa.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte CHRISTIAN STARKE and THORSTEN NEUMANN
____________

Appeal 2019-002445
Application 14/017,092
Technology Center 3600
____________

Before JOHN A. EVANS, JOHN P. PINKERTON, and
MICHAEL M. BARRY, Administrative Patent Judges.

EVANS, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING
INTRODUCTION
Appellant1 requests rehearing (“Request,” “Req. Reh’g”) of the Patent
Trial and Appeal Board’s (“Board”) Decision mailed January 2, 2020
(“Decision” or “Dec.”), in which we AFFIRMED the rejection of claims 1,
6, and 8 under 35 U.S.C. § 101 as being directed to non-statutory subject
matter.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as Wincor
Nixdorf International GMBH. Appeal Br. 3.
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ANALYSIS
In the Request for Rehearing, Appellant does not dispute our
conclusion that the claims are directed to a patent-ineligible abstract idea
under 35 U.S.C. § 101. See generally Req. Reh’g. Rather, Appellant
requests rehearing for the following three reasons. First, Appellant argues
the Decision contains an undesignated new ground of rejection. Id. at 3–6.
Second, Appellant argues we misapprehended current Office procedure in
affirming a rejection that lacks a Step 2A(ii) analysis under the Office’s
Revised § 101 Guidance.2 Id. at 6–8. Third, Appellant argues we
misapprehended current Office procedure in affirming a rejection that—even
if its Step 2A(ii) analysis were implicit—fails to apply current Office
procedure. Id. at 9–14.
As an initial matter, Appellant’s arguments are not persuasive
because, as we stated in the Decision, “‘[w]hether a claim is drawn to
patent-eligible subject matter is an issue of law that we review de novo.’”
Dec. 4 (citing SiRF Tech., Inc. v. Int’l Trade Comm’n, 601 F.3d 1319, 1331
(Fed. Cir. 2010)). Moreover, for the reasons that follow, we disagree with
Appellant that the Decision contains an undesignated new ground of
rejection or misapprehended current Office procedure as alleged.
Appellant asserts the Decision contains a new ground of rejection

2 USPTO, 2019 Revised Patent Subject Matter Eligibility Guidance, 84(4)
Fed. Reg. 50–57 (Jan. 7, 2019) (“Revised Guidance” or “Rev. Guid., 84 Fed.
Reg.”); see also USPTO, October 2019 Update: Subject Matter Eligibility,
84 Fed. Reg. 55942 (notice of update to the Revised Guidance in response to
comments received by the USPTO (available at
https://www.uspto.gov/sites/default/files/documents/peg_oct_2019_
update.pdf)) (“October 2019 Update”).
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because it “relied upon both new facts and new rationales.” Req. Reh’g 3.
In particular, Appellant submits that the Decision relies on the following
new facts:
(1) 31 U.S.C. § 5313;
(2) 31 C.F.R. 103.22(a)(l)(Bank Security Act of 1970);
(3) accompanying regulations; and
(4) James Gleick, Dead as a Dollar, NEW YORK TIMES
MAGAZINE (June 16, 1996),
https://www.nytimes.com/ 1996/06/16/magazine/dead-as-a
dollar.html.
Id. (footnotes omitted). Appellant further submits that the Decision includes
a plurality of “new” rationales for rejecting claim 1 as follows:
(1) claim 1 is directed to a mental process (page 12, lines
25 – 26);
(2) claim 1 fails to improve the functioning of the computer
itself or any other technology or technical field under
M.P.E.P. 2106.05(a) (page 15, line 2 through page 16,
line 13);
(3) claim 1 “fails to satisfy the ‘tied to a particular machine’”
under M.P.E.P. 2106.05(b) (page 16, line 14 through
page 17, line 18);
(4) “claim 1 fails to satisfy the transformation prong of the
Bilski machine-or-transformation test” under M.P.E.P.
2106.05(c) (page 17, line 19 through page 18, line 8);
(5) “claim 1 does not add meaningful limitations beyond
generally linking the use of the judicial exception to a
particular technological environment.” under M.P.E.P.
2106.05(e) and (h) (page 18, line 9 through page 19, line
7);
(6) “the additional elements of claim 1 do not amount to more
than a recitation of the words ‘apply it’ and are no more
than mere instructions to implement an abstract idea on a
computerized device” under M.P.E.P. 2106.05(f) (page
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19, lines 8 – 23).
Id. at 4 (footnote omitted). In support of its argument, Appellant cites
Waymouth,3 noting that “the court found . . . the board had asserted a new
rejection in what the board . . . characterized as ‘merely . . . an additional
reason for affirming the examiner’s rejection.’” Id. at 5 (internal quotation
marks omitted). For the reasons stated below, we disagree with Appellant’s
characterization of the Decision.
Whether there is a new ground of rejection depends upon whether the
basic thrust of a rejection has remained the same. See In re Kronig, 539
F.2d 1300, 1303 (CCPA 1976). A new ground of rejection may be present
when a decision by the Board relies upon new facts or a new rationale not
previously raised to the Appellant. See In re Biedermann, 733 F.3d 329, 337
(Fed. Cir. 2013) (quoting In re Leithem, 661 F.3d 1316, 1319 (Fed. Cir.
2011). The rejection on appeal, however, need not be repeated in haec
verba to avoid being considered a new ground of rejection. See id. For
example, a decision does not contain a new ground of rejection just because
it elaborates or explains a rejection, thoroughly responds to an appellant’s
arguments using different language, or restates the reasoning of the rejection
in a different way—so long as the “basic thrust of the rejection” is the same.
In re Kronig, 539 F.2d at 1303; see also In re Jung, 637 F.3d 1356, 1364–65
(Fed. Cir. 2001) (additional explanation responding to arguments offered for
the first time “did not change the rejection” and appellant had fair
opportunity to respond).4

3 In re Waymouth, 486 F.2d 1058 (CCPA 1973).
4 See also In re Noznick, 391 F.2d 946, 949 (CCPA 1968) (no new ground
of rejection made when “explaining to appellants why their arguments were
ineffective to overcome the rejection made by the examiner”);
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Contrary to Appellant’s argument, the Decision does not rely on any
new facts or rationale. Rather, as the Decision states, “[w]e adopt[ed] as our
own the determinations and reasons set forth in the rejection from which this
appeal [was] taken and in the Examiner’s Answer.” Dec. 3. And as we
explained, any additional facts or rationale the Decision contained were
merely “explanation to highlight and address specific arguments and
determinations primarily for emphasis.” Id.
Moreover, the basic thrust of the Examiner’s rejection of claims 1, 6,
and 8 under 35 U.S.C. § 101 has not changed. The legal basis and rationale
provided for this rejection in each of the Final Office Action, the Examiner’s
Answer, and the Decision follow judicial precedent5. The Final Office
Action, Examiner’s Answer, and Decision each determine claims 1, 6, and 8
are directed to an abstract idea. See Final Act. 3–4, see also id. at 4 (“claim
1 describes making secure payments and controlling spending by customers
and therefore is directed to an abstract idea” (emphasis omitted)); Ans. 6
(“When claim 1 is read in light of the rest of Appellant’s disclosure, it seems
reasonable to the Examiner to refer to claim 1 (for example) as being

In re Krammes, 314 F.2d 813, 817 (CCPA 1963) (“It is well established that
mere difference in form of expression of the reasons for finding claims
unpatentable or unobvious over the references does not amount to reliance
on a different ground of rejection.”); In re Cowles, 156 F.2d 551, 555
(CCPA 1946) (holding that the use of “different language” does not
necessarily trigger a new ground of rejection).
5 See Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 217–18 (2014); Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 75–77 (2012);
see also, e.g., In re Smith, 815 F.3d 816, 818 (Fed. Cir. 2016) (to determine
whether an invention claims ineligible subject matter, one applies “the now-
familiar two-step test introduced in Mayo, and further explained in Alice”)
(citation omitted).
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directed to ‘making secure payments and controlling spending by customers’
which fits into multiple categories that have been described as examples of
abstract ideas in recent USPTO guidance.”); Dec. 13–14 (explaining why the
Examiner’s Step 2A analysis was reasonable).
With respect to Step 2A(i), Table 1 of the Decision identifies each step
of claim 1 as corresponding to an abstract idea in the category of
“[o]rganizing human activities, e.g., fundamental economic principles or
practices (including mitigating risk); commercial interactions (including
sales activities or behaviors), managing personal behavior.” Dec. 11–12.
This tracks the Examiner’s rejection, which determines Appellant’s claims
to be “similar to cases found by the courts to be abstract idea, such as,
managing risk (hedging) during consumer transactions (Bilski) and
mitigating settlement risk in financial transactions (Alice Corps.),” which
“describe concepts relating to intrapersonal and interpersonal activities, such
as managing transactions between people.” Final Act. 4 (emphasis omitted).
That we provided some additional facts to elaborate on the recited abstract
concepts does not change the basic thrust of our analysis, nor does our
statement that the claims may also be described as a mental process. See
Dec. 12–13.
With respect to Step 2A(ii), each of the Decision’s so-called “new”
rationales were previously addressed by the Examiner, albeit using different
language. First, the Examiner addressed whether the claims improve
computers or another technology (MPEP § 2106.05(a)) when finding that
“the claim does not effect an improvement to another technology or
technical field and to the functioning of a computer itself” (Final Act. 5; see
also Ans. 5–6, 8–9) and that “[w]hat Appellant describes . . . is how any
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generic computer process data without stating how or if this transformation
is intended to in some way improves the function of the computer itself”
(Ans. 4–5). Second, the Examiner found that the claims do not recite
meaningful limitations beyond the abstract idea (MPEP §§ 2106.05(e),(h))
when finding that “the claim does not move beyond a general link of the use
of an abstract idea to a particular technological environment” (Final Act. 5;
Ans. 6) and “that the control device limitations . . . are simply an attempt to
limit the abstract idea to a particular technological environment” (Ans. 7).
Third, the Examiner found that the claims do not recite a particular machine
(MPEP § 2106.05(b)) when stating that “the additional elements are generic
computer components claimed to perform their basic functions.” Ans. 6.6
As the Decision explains, this is consistent with Appellant’s Specification,
which “describ[es] a payment device in no more than generic terms and
cit[es] German Patent DE 102007024301 A1 for a payment device as prior
art.” Dec. 16 (citing Spec. 1:27–2:31). Fourth, the Examiner found that the
additional claim elements amount to no more than the words “apply it”
(MPEP § 2106.05(f)) when stating that “[t]he present case is different: the
focus of the claims is not on such an improvement in computers as tools, but
on certain independently abstract ideas that use computers as tools.” Ans. 8.
Fifth, the Examiner found that the claims do not meet the transformation
prong of the Bilski machine-or-transformation test (MPEP § 2106.05(c))
when stating that “the use of a . . . transformation to a different state or thing
[is] not relevant to the instant application” (Final Act. 8; Ans. 5) and, more

6 See also id. at 9 (finding that the claimed invention “does not indicate that
specialized computer hardware is necessary to implement the claimed
systems, similar to the claims at issue in Alice Corp.”).
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specifically, that “the claims’ invocation of servers, networks, and database
does not transform the claimed subject matter into patent-eligible
applications” (Ans. 9).
With respect to Step 2B, each of the Final Office Action, the
Examiner’s Answer, and the Decision determine that the additional elements
recited in claims 1, 6, and 8 considered alone and in combination, do not
amount to an inventive concept. See Final Act. 4–5 (determining that the
additional elements perform functions “that are routine, conventional and
well understood” and that “there is no inventive concept sufficient to
transform the claimed subject matter into a patent-eligible application”);
Ans. 6 (“The control device is a general purpose processor that performs
general purpose functions with another interface that are routine,
conventional and well understood.”), 10 (“[T]he rejection identifies the
computing functions required to carry out the claimed steps . . . fall within
the functions identified by the MPEP . . . as having been recognized as being
well-understood, routine and conventional functions.”); accord Dec. 21–23.
Therefore, the basic thrust of the Office’s position in rejecting claims
1, 6, and 8 under 35 U.S.C. § 101 has remained the same from the Final
Office Action to the Examiner’s Answer, to the Decision on Appeal. That
the Examiner did not use language identical to the MPEP or current Office
Guidance in analyzing the claimed invention for patent subject matter
eligibility does not amount to a new ground of rejection. See Leithem, 661
F.3d at 1319. And any additional discussion in the Decision relative to the
issue at hand amounts only to an elaboration on the rationale set forth in the
Final Office Action and Examiner’s Answer. See Jung, 637 F.3d at 1364–
65. It is also important to note that the facts in Waymouth are readily
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distinguishable from those here. In Waymouth, the Board sustained the
examiner’s 35 U.S.C. § 112, first paragraph, rejection “on a wholly different
basis” by focusing on a claim element different from that which was relied
upon by the Examiner. Waymouth, 486 F.2d at 1060–61. Here, by contrast,
we used the same legal basis as the Examiner and have not relied on any
new facts or rationale in sustaining the Examiner’s § 101 rejection.
In view of the foregoing, we also disagree with Appellant that we
misapprehended current Office procedure because the Examiner’s rejection
lacks an explicit Step 2A(ii) analysis. See Req. Reh’g 6–8. Rather, as our
discussion above makes clear, the Examiner effectively set forth a Step
2A(ii) analysis, which our Decision adopted, because the Final Office Action
and Examiner’s Answer adequately considered and addressed the relevant
factors discussed in the Revised Guidance. See Revised Guidance, 84 Fed.
Reg. 54–55, 55 nn.25, 27–30, 32 (citing MPEP §§ 2106.05(a)–(c), (e), (f),
(h)). That the Examiner’s analysis did not include the specific phrase
“practical application” and at times used language slightly different from
that of the Guidance and MPEP does not change our view.
We likewise are not convinced that we misapprehended current Office
procedure because parts of the Examiner’s Step 2A(ii) analysis may have
been implicit. See Req. Reh’g 9–14. Appellant’s argument centers on the
misconception that only one section of the Examiner’s Answer (Ans. 7:16–
10:5) addresses Step 2A(ii). As specified above, many other sections of the
Examiner’s Answer and Final Office Action address the relevant Step 2A(ii)
factors. And, to the extent our discussion above refers to passages from the
section cited by Appellant, we have explained specifically how those
passages pertain to Step 2A(ii). Moreover, we are not persuaded by
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Appellant’s assertion that the cited section of the Answer uses language that
should be excluded from consideration in Step 2A(ii). See Req. Reh’g 12–
13. The Revised Guidance does state that “Examiners should note . . . that
revised Step 2A specifically excludes consideration of whether the
additional elements represent well-understood, routine, conventional
activity.” Rev. Guid., 84 Fed. Reg. at 55. But the Examiner did not use the
phrase “well-understood, routine, conventional activity” in the cited section
of the Answer. See Ans. 7:16–10:5. Nor does Appellant identify any
persuasive evidence that the Examiner’s mere usage of the terms
“conventional,” “generic,” and “well-known” therein is prohibited. See Ans.
7:16–10:5.
Thus, we have considered the arguments raised by Appellant in the
Request for Rehearing, but Appellant has not persuaded us that the Decision
contains an undesignated new ground of rejection or that we
misapprehended current Office procedure in any way. Although we have
considered the Decision in light of the Request for Rehearing, we decline to
modify the Decision in any respect.

CONCLUSION
Appellant’s Request for Rehearing is DENIED.

Outcome of Decision on Rehearing:
Claims 35 U.S.C
§
Reference(s)/Basis Denied Granted
1, 6, 8 101 Eligibility 1, 6, 8

Final Outcome of Appeal after Rehearing:
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Claims 35
U.S.C. §
Reference(s)/Basis Affirmed Reversed
1, 6, 8 101 Eligibility 1, 6, 8

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

DENIED